Not All Is Fair (Use) In Trademarks And Copyrights

In an age where images are available at our fingertips and we can "right-click" to copy just about anything, it is far too easy to end up on the wrong side of fair use. Reliance on the mistaken though common belief that everything is fair if it is found on the Internet could land the user on the wrong side of a copyright or trademark infringement lawsuit. Although it might be fair to use a third party's trademark or copyrighted image in some instances in the United States, the line between infringement and fair use is not always clear. Some trademarks are protected under copyright laws, and some copyrighted images can function as trademarks as well. Therefore, it is important to consider if a use is fair under both trademark and copyright laws.

Fair Use of Trademarks

Descriptive Use

Under the traditional or "classic" form of fair use in U.S. trademark law, the accused infringer uses the plaintiff's mark in a purely descriptive sense, that is, to describe the infringer's own product. When a trademarked term also describes a person, place or attribute of goods or services, the trademark owner cannot claim exclusive rights to the use of the term in its primary or descriptive sense. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) (use of the trademarked term "microcolor" to fairly and in good faith describe a feature of the defendant's permanent makeup was fair under Section 33(b)(4) of Lanham Act, 15 U.S.C. § 1115(b)(4)).

Nominative Fair Use

Less clear is when an alleged infringer uses the plaintiff's trademark to refer to the plaintiff's products in the alleged infringer's advertising, website or other materials. In the United States, such uses are non-infringing "nominative fair uses" if they do not cause confusion and there is no indication of sponsorship or endorsement. This nominative fair use "does not try to capitalize on consumer confusion or to appropriate the cachet of one product for a different one." New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9th Cir. 1992) (quoting Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1185 (5th Cir. 1980)). For example, when it is for purposes of criticism, news reporting or comparison, or as a point of reference, use of a third-party mark may be fair. The Ninth Circuit in New Kids enunciated a three-part test for nominative fair use, which is set out below. (1) No need for absurdities... Referring to a third-party product or service by its trademark may at times be necessary. To put it another way, trademark law does not compel individuals to use "absurd turns of phrase" simply to avoid trademark liability. Playboy Enterprises, Inc. v. Welles, 279 F.3d 796, 804-05 (9th Cir. 2002). For example, one could refer to the Chicago Bulls as "the professional basketball team from Chicago," but it is far simpler to refer to them by their name. New Kids, 971 F.2d at 306. (2) Less is more... The third party must use only so much of the plaintiff's mark as is reasonably necessary to identify the plaintiff's goods or services. When former Playmate Terri Welles created a website using "Playboy" and "Playmate of the Year 1981" in the headings, metatags and banner ads of her website, the Ninth Circuit determined that Welles fairly used the title that she had earned to describe herself. Welles, 279 F.3d at 804. However, the use of the abbreviation "PMOY '81" repeatedly as a watermark on the website was more than was necessary to describe herself and was not fair use. Id. Compare J.K. Harris & Co. v. Kassel, 253 F. Supp. 2d 1120 (N.D. Cal. 2003) (finding fair use in reference to plaintiff's mark, though frequent and obvious, on website for purposes of criticism). The use of a word mark, rather than a corresponding logo or design, may weigh in favor of a finding of fair use. The defendant in Welles used only the...